Frequently Asked Questions
Can I challenge a trade mark application?
You can challenge a trade mark application if you think it may be an infringement or inappropriate.
Anybody can submit an opposition to an application on ‘absolute grounds’. This is where a trade mark is too generic or descriptive of a product or service, for example, if an application attempted to trade mark a generic industry term such as ‘photographer’ or ‘shop’. In reality, such attempts would not pass an initial examination, however, terms relating to niches or specific industries may go unnoticed by the UKIPO but still be considered too generic by organisations familiar with the industry. It’s important for a trade mark to adequately distinguish the brand from the product or service in some manner.
If you already hold a registered trade mark and believe that an application is likely to infringe on your own, you may submit an opposition on ‘relative grounds’. It is worth making sure that the applicant is registering their trade mark in a class similar to your own in a manner that is likely to cause confusion before taking on the time and financial commitments associated with the trade mark opposition procedure. For example ‘Penguin’ exists as a publishing company, chocolate bar and clothing company, as none of these is likely to be mistaken for the other.
What are the steps in the trade mark opposition procedure?
Without the benefit of legal advice, this can be a complicated procedure, but here is a brief summary of how it works in the UK (for more information please get in touch, we’d be happy to discuss your situation):
- Notice of threatened opposition – If a registered trade mark holder is considering opposing an application they might first file a notice of threatened opposition. This extends the opposition period by a further month and gives the parties more time to enter into settlement discussions and hopefully come to an agreement that is beneficial for both parties.
- Formal opposition – If no agreement can be reached, a notice of opposition and statement of grounds can be filed.
- Applicant’s response – This is the applicant’s opportunity to defend the opposition and explain why they think it should be dismissed.
- Cooling off period – There is the possibility, after both sides have written their statements, for a ‘cooling off’ period of 9 to 18 months for further negotiations and discussion to take place.
- Witness evidence – In most oppositions the parties will also submit factual evidence to support their legal arguments.
- Decision – The hearing officer will make a decision on the case, either based on final written submissions or an oral hearing. The successful party is normally awarded scale costs.
- Appeal – The losing party has 28 days if they wish to submit an appeal to either an appointed person or the High Court. The appointed person’s decision is final and cannot be appealed, however High Court decisions may be challenged in the court of appeal.
Within each of these steps are several smaller steps and possibilities depending on the response, or lack of, from either party. Thankfully our expert team of trade mark lawyers are well practiced in trade mark opposition proceedings and would be happy to help!
How long does the trade mark opposition process take?
It is difficult to say how long the opposition process will last as it depends on many factors. Opposition must be brought within two months of the publication of the trade mark application in the on-line Trade Marks Journal (three months if a notice of threatened opposition is served), and the shortest route to completing the process may include a swift resolution via negotiations between both parties at this stage. If this is unsuccessful there is the potential for a 9 to 18 month cooling off period for further negotiation followed by a lengthy tribunal/hearing/appeals process.
In the most extreme circumstances the process can last for years, however several months may be a more realistic timeframe.